Appeal No. 2005-2338
Application No. 09/754,001
Finally we consider the rejection of claim 21 under 35 U.S.C. § 103.
Appellants argue on page 11 of the brief that:
[c]laims 5, 14, and 21 are further patentable over Teper and Strandberg,
because both failed to teach or suggest the required limitation of “said
facilitating comprises sending an email with a uniform resource locator
(URL) of the online service provider to the email address.” The limitation
does not merely recite sending either an email or a URL. Instead the
limitation clearly recites require [sic] ‘the transmission of an email with the
URL of the service provider to make possible roaming (“said facilitating
comprises”)”
Col. 9, lines 38-46 of Teper may have disclosed URL of a service
provider but col. 9, lines 55-57 of Teper merely disclosed “emailing the
billing statement” to the subscriber. There is no teaching in either
reference of “emailing the URL of the service provider.” In particular, there
is no teaching in either reference on “emailing the URL of the service
provider” to enable roaming by the subscriber.
Appellants’ arguments are not commensurate with the scope of claim 21.
As discussed supra, we reverse the examiner’s rejection of claims 5 and 14
because of limitations directed to a request for roaming capability, however we
do not find that claim 21 contains such a limitation. Claim 21 is dependent upon
claim 18 and contains the limitation of sending an email with a uniform resource
locator (URL), Internet address, of the online service provider.3 Further, we note
that the examiner identifies, on page 8 of the brief, that Strandberg, not Teper,
3 We note that claim 21 is dependent upon claim 18. Claim 18 does not include
a limitation directed to roaming nor does it provide antecedent support for claim
21’s recitation of “the e-mail address.” However, claim 19 does contain a
limitation directed to roaming and provides antecedent basis for “the e-mail
address.”
14
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007